Author: Miguel Angel Medina González (Elzaburu, Madrid)
Bureau National Interprofessionnel du Cognac v Korkein hallinto-oikeus, Court of Justice of the European Union (First Chamber), joined cases C-4/10 and C-27/10, 14 July 2011
Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr182, first published online: November 29, 2011
The ECJ has confirmed the applicability of EC Regulation 110/2008 on the definition, description, presentation, labelling, and the protection of geographical indications (GIs) of spirit drinks in assessing the validity of a trade mark registration that contains a GI, even where registration took place before the regulation entered into force, and that a mark which contains a protected GI must be refused or invalidated, where its use would lead to any of the situations referred to in Article 16 of the regulation.
Two national trade mark applications containing elements protected under GI regulations were filed in Finland. It is an accepted fact that the TRIPS regulations have been incorporated into the applicable EU regulations.
In its judgment, the court dealt mainly with questions concerning the temporal and direct applicability of certain regulations (EC Regulation 110/2008 and previous EC Regulation 1576/89 as amended by Regulation 3378/94, among others) and their compatibility with the principles of legal certainty and protection of legitimate expectations. The court also explored the prohibition of registration of trade marks containing a GI protected by EC Regulation 110/2008 or such an indication in the form of a generic term or a translation when they cover spirit drinks which do not meet the requirements set for use of the GI. Articles 14, 15, 16, and 23 were analysed.
Another topic addressed was whether such trade marks are liable to mislead the public in the way referred to in Article (1) (g) of the Trade Mark Directive (TMD)—which is the same under the current TMD (2008/95/EC) as in the previous TMD (89/104)—and whether registration of trade marks which contain elements infringing Regulation 110/2008 can be prohibited on the basis of Article 3 (2) (a) of the TMD by a Member State. This article provides that a trade mark is to be rejected or invalidated if its use can be prohibited by virtue of legislation other than the trade mark law of the Member State in question or of the Community.
The first included the expression COGNAC L&P HIENOA KONJAKKIA Lignell & Piispanen ‘Product of France’ ‘40%’ ‘Vol 500 ml’; and the second included ‘KAHVI-KONKAKKI Café Cognac Likööri – Likör – Liqueur’ ‘Lignell & Piispanen’ ‘21%’ ‘Vol 500 ml’.
Both trade marks were registered and subsequently opposed by the Bureau National Interprofessionel du Cognac (BNIC). The opposition was accepted against the first and rejected against the second. Appeals were filed by the applicant and the opponent. The appeal of the applicant was upheld, while that of the BNIC was dismissed. As a result, both registrations were granted, against which the BNIC appealed in the Supreme Administrative Court (‘Korkein hallinto-oikeus’), which referred certain questions to the ECJ for a preliminary ruling.
The first question of the Finnish court refers to the applicability of EC Regulation 110/2008 in assessing the validity of a trade mark registration that contains a GI protected by the regulation, where registration took place before the regulation entered into force.
The ECJ stated that EU measures must not take effect from a point in time before their publication, but there may be clear exceptions depending on their terms or general scheme or where their purpose so demands and legitimate expectations are duly respected. The court finally concluded that Article 23 (1) of EC Regulation 110/2008 clearly makes it possible to refuse or invalidate a trade mark registered before the entry into force of the regulation.
The court added that, in the present case, there is no question as to the applicability of the TRIPS time limits, as the trade mark was not registered before 1 January 1996 or before the date of protection of the COGNAC GI, these two situations being foreseen in TRIPS.
In its second question, the Finnish court asked whether Articles 16 and 23 of EC 110/2008 preclude the registration of a mark containing a protected GI, or such an indication in the form of a generic term and translation, and which is registered for spirit drinks which do not satisfy the conditions for the use of that GI.
Regarding Article 23, the ECJ considered that, according to paragraph (1), registration of a mark which contains a GI registered in its Annex III (eg COGNAC) is to be invalidated, if its use would lead to any of the situations referred to in Article 16 of that regulation. As a result, national authorities must refuse or invalidate the registration of a mark if it is used in such circumstances and is not covered by the temporary derogation provided for in Article 23(2) of that regulation (which incorporates the temporal derogations provided by TRIPS).
As to Article 16, it considered that it refers to situations in which the marketing of a product is accompanied by a reference to a GI in circumstances liable to mislead the public as to the origin of the product or, at the very least, to set in train in the mind of the public an association of ideas regarding that origin or to enable the trader to take unfair advantage of the reputation of the GIs concerned.
The court stated that the extent of the protection must be assessed in light of the rule in Article 15(4), whereby the GI may be borne only by spirit drinks which meet all the specifications in the technical file concerning the GI and reiterated that Articles 15 (3) and 14 (2), respectively, provide that GIs cannot become generic and cannot be translated on the label or in the presentation of a spirit drink, and that this is applicable to ‘Cognac’.
Of the situations provided for in Article 16, the ECJ considered that, in relation to point (a), the ‘spirit drinks’ covered by the relevant marks were ‘comparable’ to the spirit drink covered by the GI ‘Cognac’ and therefore the marks make a ‘direct commercial use of a geographical indication in respect of products which are comparable’, but which are not covered by the GI.
As to point (b), the ECJ declared that the use of ‘Cognac’ for spirit drinks which do not meet its specifications may be categorized as an ‘evocation’.
A bit of light in the sometimes confusing mix of European Union regulations concerning GIs
An important question is that of the applicability of the prohibitions under EC Regulation 110/2008 (which are stronger than those in the previous Regulation 1576/89) to those trade marks already registered before the entry into force of Regulation 110/2008.
The question of which regulation may be applicable, particularly in cases of conflict between GIs and trade marks, where the applicable EU regulations have gone through amendments after a certain trade mark and a certain GI were protected, seemed to be open to discussion. This is particularly true in the case of wines, where amendments have been particularly frequent and sometimes it is even difficult to know exactly which rule was in force at a certain time. This decision points in a certain direction which could be a guideline for future cases and other products, like wines.
A bit of shadow over the concept of ‘evocation’
The ECJ has made reference to the concept ‘evocation’ in previous judgments, including for example Case C-87/97 Cambozola v Gorzonzola or C-132/05 Parmesan, and provided as an illustration a situation where the image triggered in the mind of the consumer by the new trade mark incorporating part of the protected designation was that of the product whose designation was protected. It is rather shocking that the court now mentions as ‘evocation’ a situation where the trade mark does not include a part of the protected designation as used to be the case (eg Cambozola or Parmesan), but the expression ‘Cognac’ as such (Paragraph 58 ‘… Cognac for spirit drinks which do not meet the relevant specifications may therefore be categorised as an evocation’).
Other aspects of interest
The ECJ also referred to the non-generic nature of protected GIs and to the prohibition of translations.
The fact that the specifications of goods covered by Trade Mark No 226350 are ‘Cognacs’ may seem to be a generic use and suggest no intention to make the products comply with the specifications of use of the GI. The situation is clearer in the case of Trade Mark No 226351 for ‘liquors containing konjakki’, which then are not ‘Cognac’.
The decision also appears to conclude that a protected GI cannot be translated.